Questionnaire May 2003 Q Scope of Patent Protection. Response of the UK Group

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1 Questionnaire May 2003 Q Scope of Patent Protection Response of the UK Group 1.1 Which are, in your view, the fields of technology in particular affected by recent discussions concerning the scope of patent protection? We are unable to identify any others than those identified in the introduction to the Question, namely biotechnology, and the interrelated fields of computer software and business methods. 1.2 What makes this field/these fields of technology special compared to other fields of technology in the context of this discussion? All are areas of technology which have seen rapid development in recent decades, and have taken a course never foreseen when the EPC was drafted. However the specific reasons for the problems as to scope of patent protection in relation to biotechnology on the one hand, and computer programs and business methods on the other, are different. As to biotechnology, in Europe and thus in the UK, there are two reasons the exclusion of plant and animal varieties, and the ordre public and morality exception, which has provided opponents of biotechnology with a means of attacking biotechnology as a whole, under the guise of challenging the validity of biotechnological inventions in a convenient forum, namely that of EPO Opposition proceedings. As to computer programs and business methods, the reasons are the interrelated examples of subject matter which is not by Article 52(2) EPC regarded as inventions, and in particular (a) mathematical methods, (c) schemes, rules and methods for performing mental acts or doing business, programs for computers and (d) presentations of information. Although most case law in the EPO has concentrated on the two specific exceptions as to methods of doing business and programs for computers, courts in the UK have been prepared to find computer programs excluded from patentability on the basis of other exceptions, such as in Raytheon Co s Application [1993] RPC 427 and Fujitsu s Application [1997] RPC 608 where the process claims of computer implemented inventions were found excluded as methods for performing a mental act. 2.1 What is the definition of patentable subject matter in your jurisdiction? Do different definitions apply in various fields of technology? If so, what are the differences? In the UK, as in the EPC, there is no express definition of patentable subject matter and the only approach to a definition is one that can be derived by exclusion, from the terms of

2 2 Articles 52 and 53 EPC, namely inventions which are susceptible of industrial application (to which in all fields of technology has been added under the Revision Act) but which are not amongst the various express exclusions as to - subject matter or activities which in particular shall not be regarded as inventions as set out in Article 52(2) as qualified by Article 52(3) (although this listing is expressed not be exhaustive, but exemplary and so can hardly serve to define), - methods which shall not be regarded as inventions susceptible of industrial application as set out in Article 52(4), - exceptions from patentability as set out in Article 53. The arbitrary and illogical nature of the arrangement of these exceptions is emphasised by the Revision Act, which transfers the Article 52(4) exception to Article 53(3) ( exceptions from patentability ) and omits the shall not be regarded as inventions susceptible of industrial application language What are exemptions/exceptions from patentability? The structure of the exceptions is set out in the answer to 2.1 above and their content is summarised in the introduction to the Question What is the reasoning behind those exemptions/exceptions? Article 52(2) & (3) EPC the listing is expressed to be a non-exhaustive listing of examples. It sets out matters which, given the state of technology when the EPC was drafted, were considered to be examples of matter which could not be patented, or perhaps which people would have no interest in patenting. To an extent, for example with mere discoveries, that remains the case see for example Fujitsu s Application [1997] RPC 608 in which it was observed: It is and always has been a principle of patent law that mere discoveries are not patentable, but those discoveries and ideas which have a technical aspect or a technical contribution are. However such a fundamental and widely accepted principle, which remains true to this day, needs not be stated in the legislation indeed to do so would invite meaningless semantic discussion as to what constitutes a discovery, for that is precisely what for example under the terms of the US Constitution patents are meant to protect. Article 52(4) EPC (Article 53(c) EPC under the Revision Act) the exception was presumably intended to ensure that medical practitioners would not be at risk of infringing patents when diagnosing and treating illness. However such an aim would be better and more directly addressed by an express exception from infringement. Moreover in response

3 3 to the current exception the intellectually unsatisfactory concept of the second medical use claim has had to be developed, which has in turn led to the revision of the exception to allow the protection of second and subsequent medical uses by use bound product claims under the Revision Act. Article 53(a) EPC the exclusion on ordre public or morality grounds would seem unexceptionable (albeit arbitrary and irrational given ever changing public approaches to morality ) were it not for the untoward use made of it by pressure groups opposed to biotechnology when it has served as a back door for attacking activities which are either perfectly legal, or to the extent that it applies to activities which are not legal, is otiose, as it does not permit such activities to be undertaken (thus it is to be noted that the list in Article 6.2 of the Biotechnology Directive covers activities some of which are illegal under national laws of Member States (but as to which the European Union has no competence) but others which are not illegal). There is no longer any rationale for such provision in terms of its precluding the dissemination of dangerous technology because, consistent with TRIPs, the Revision Act will delete the reference here to publication Article 53(b) EPC the exclusion of plant (but not of animal) varieties was required in order to accommodate the ban on cumulative protection imposed by the earlier version of the UPOV Convention. The current version of the UPOV Convention no longer requires it, and there is no longer any rationale behind this exception, even though as a result of G1/98 Novartis II / Transgenic Plant [2000] EPOR 303, on the sterile semantic argument as to what constitutes a variety, (and as now reflected in Article 4.2 of the Biotechnology Directive) the exception is no longer of great practical significance, except from the point of view of claim drafting. 3.1 Is the scope of protection sufficient or does it lack opportunities for further protection? This includes economic aspects for the users as well as for the public in general regarding various technologies. We believe that the scope of protection is presently arbitrarily limited by EPC Article 52 and in the UK by its equivalent Section 1(2) of Patents Act If the scope of protection is not sufficient, how does this affect the users policy on patenting? Does this also have an impact on research policy? It is the apparent existence of arbitrary exceptions which leads to considerable misunderstanding on the part of potential users of the patent system and leads to confusion in both academic and commercial circles. This in turn we believe inhibits R&D within the UK and the rest of Europe detrimentally in comparison with, for example, US, Japanese and Australian industry in these areas.

4 4 3.3 What are obstacles from political or social sources outside the purely legal field which play a role in research and patenting? The subject of the wider obstacles to research is an extensive topic in its own right which would not appear to be relevant to the specific focus of the Question. 3.4 How should new kinds or categories of inventions be treated? Should there be an enlargement of patent protection? If so, what are the reasons? All categories of invention should be treated similarly and we believe that arbitrary exclusions should be removed to encourage a uniform treatment of the patenting of inventions and to provide certainty for both patentees and the public. The reasons for removing arbitrary exclusions are the same as apply to other areas of technology where patents are allowable, in particular, to encourage investment in R&D, in return for full disclosure, enabling the pace of development to be maintained. 3.5 If you find the range of patentable subject matter too wide, how should it be limited? What would be the reasons for such a limitation? What do you see as the positive effects of such a limitation? We do not believe that limitations of an arbitrary nature are helpful and see no positive effects from them. 4.1 Which upcoming problems do you see specifically as a result of a change of the scope of patent protection regarding the requirements for patentability, in particular novelty and inventive step? Arbitrary exceptions from patentability have distracted attention from the core issues such as inventive step and appropriate claim scope to the sterile discussion of the scope of such exceptions. Such arbitrary exceptions have, in areas of innovative activity, undergone progressive narrowing of their scope to the benefit of the determined applicant with a skilful patent attorney and to the detriment of those innovators who together with their advisors take such exceptions at face value. Thus we view the arbitrary exclusions as themselves a cause of problems, and of their loss as removing a source of problems. 4.2 What are specific problems of the granting proceedings (search, examination) if the scope of patent protection is enlarged? Such problems will be no greater than those met in any new area of technology. Moreover, absent arbitrary exceptions there will be a much more rapid and logical development of a readily searchable body of prior art in the patent literature, a paucity of which has for example bedevilled searching in the area of computer program patenting.

5 5 4.3 What do you see as possible solutions for these problems? Would further harmonization of the laws help to solve such problems and, if so, in which way? For the reasons set out above we see no problems arising from the removal of the arbitrary exceptions and indeed we see the exceptions as a source of problems in themselves. Thus the question of a solution as sought in the Question does not arise. The removal of such exceptions will contribute to harmonisation of the law in that for example in Europe developments in US case law as to computer program and business method patents would become more directly relevant.